USPTO Patents Application 09933766

Serial No. 09/933,766

REMARKS

In the July 21 , 2006 Office Action, the Examiner noted that claims 1 -29 were pending in
the application, but claims 10-27 had been withdrawn from consideration; rejected claims 1-3, 6-
9, 28 and 29 under 35 U.S.C. § 1 02(e); and rejected claims 4 and 5 under 35 U.S.C. § 1 03(a).
In rejecting the claims, U.S. Patent Application Publication No. 2002/0010928 by Sahota
(Reference A in the July 21 , 2006 Office Action) and U.S. Patent 5,774,534 to Mayer (Reference
A in the October 4, 2004 Office Action) were cited. Claims 1-29 remain in the case. The
rejections are traversed below.

Rejections under 35 U.S.C. § 102(e)

On pages 3-6 of the July 21 , 2006 Office Action, claims 1-3, 6-9, 28 and 29 were rejected
under 35 U.S.C. § 1 02(e) as anticipated by Sahota . In rejecting claim 1 , it was asserted that
paragraphs [0060] and [0061] of Sahota disclosed the limitations recited on the last 6 lines of
claim 1 . As discussed in the Amendment filed November 21 , 2006 (received by the U.S. Patent
and Trademark Office on November 24, 2006), paragraphs [0060] and [0061] of Sahota merely
describe linking to a website from a TV commercial. There is no suggestion in these paragraphs
and nothing has been found anywhere else in Sahota that suggests including in either the
website address or elsewhere in the TV commercial, "commercial message broadcast
designation information ... designating at least the commercial message broadcast" (claim 1 ,
lines 1 0-1 1 ). What is displayed in the system disclosed by Sahota is only a web site address of
a retailer. No suggestion has been found in Sahota that the web site address designates the
commercial message in anyway.

On page 9 of the January 19, 2007 Office Action, the "Response to Arguments" section
cited paragraph [0061] of Sahota which references box 445 of the flowchart in Fig. 4,
"LAUNCHING INTERACTIVE SERVICES" by "accessing interactive content 510 ... [to] begin
interacting with a website as shown in FIG. 5B" which is just a screenshot of a retailer's web
page. While this might be interpreted as implying that the end result of what is claimed in claim
1 and taught by Sahota is similar, it is not understood how paragraph [0061] of Sahota teaches
what is recited in claim 1 which is required of an anticipatory reference.

It is submitted that paragraph [0061] of Sahota is not as relevant to claim 1 as para-
graphs [0057] to [0060] and the corresponding boxes 425, 430, 435 and 440 in Fig. 4 and that
the paragraph in Sahota that is the most pertinent to the last six lines of claim 1 is paragraph
[0038]. These paragraphs state that "[a]t operation 425, multiplexer/encoder 215 queries

9

Serial No. 09/933,766

broadcasting server 260 to determine if the video stream is to be integrated with interactive

content" (paragraph [0057]), then "[a]t operation 430, ... broadcasting server 260 will send an

ATVEF trigger to multiplexer/encoder 21 5. Multiplexer/encoder 21 5 then integrates interactive

content in real-time based on the ATVEF trigger" (paragraph [0058]) and "multiplexer/encoder

21 5 then transmits the integrated content to set-top box 1 06" (paragraph [0059]). It is not clear

from these paragraphs how the "integrated content" is transmitted. However, in paragraph

[0060], it is stated that

[d]evice frameworks 270 within set-top 1 06 may further process the integrated
content for display on TV 1 04. For example, as shown in FIG. 5A, set-top 1 06
sends interactive content of a URL location "http://www.xyz.com" for a clothing
retailer with TV commercial 520, which is a commercial for the clothing retailer,
for display on TV 104

As illustrated in Fig. 2, and described in paragraph [0038],

[d]evice frameworks 270 communicates with application server 240 via network
275, which can include a residential broadband network. In one embodiment,
application server 240 provides the necessary information and data and instructs
device frameworks 270 to integrate automatically an existing Internet advertising
content, e.g., an advertisement banner, with a television commercial being
broadcasted to set-top box 106 via broadcast network 290.

In other words, Sahota does not teach that multiplexer/encoder 21 5 inserts the URL into a

broadcast TV commercial; rather, "device frameworks 270 receive ATVEF triggers and content

from application server 240" (paragraph [0035]) via the Internet and as a result, device

frameworks 270 adds the content, i.e., the URL, on the screen while the broadcast television

advertisement is being displayed, in real-time.

Claim 1 has been amended to further clarify the differences between the invention and
what is taught by Sahota . Claim 1 now recites "receiving at a broadcast reception terminal
device of a client, as part of the commerce information, commercial message broadcast desig-
nation information contained in the commercial message information and designating at least
the commercial message broadcast" (claim 1 , lines 9-11). As discussed in the Amendment filed
November 21 , 2006, nothing has been cited or found in Sahota suggesting that "commercial
message broadcast designation information" is received "at a broadcast reception terminal .. as
part of the commerce information" as recited in claim 1 . Rather, Sahota discloses that a set-top
device receives interactive content of a URL location "http://www.xyz.com" for a clothing retailer
via the Internet and displays the URL on a TV during a TV commercial for the clothing retailer,
so that "a user of TV 104 can launch interactive services by accessing interactive content"
(paragraph [0061]).

10

Serial No. 09/933,766
For at least the above reasons, it is submitted that claim 1 , as well as claims 2-9 which
depend therefrom, patentably distinguish over Sahota .

In addition, claim 8 recites "distributing instructions about merchandise or a service
generated by the merchandise producer or the service provider to a shop at which a client
receives merchandise or a service" (claim 8, lines 1-3). It is clear from the application, e.g., the
paragraph spanning pages 17 and 18, that the word "shop" refers to a physical location, not an
Internet website. The system taught by Sahota only enables the "client" (e.g., claim 8, line 3) to
make purchases from an online store. On the other hand, according to claims 1 and 8, a client
can make a purchase in shop, i.e., a "bricks and mortar" store, using "commercial message
information relating to the commercial message broadcast" (claim 1 , line 13) and "instructions
about merchandise or a service generated by the merchandise producer" (claim 8, line 13) which
could be referenced on a printout or a portable terminal possessed by the client, such as a
mobile phone, as illustrated in Figs. 4 and 16A and described on pages 38, 42, 43, 51 and 52 of
the application. For the above reasons, it is submitted that claim 8 further patentably
distinguishes over Sahota .

Claim 28 has been amended to recite "commercial message broadcast designation

information contained in the commercial message information and designating at least a

commercial message broadcast concurrently via a single broadcast medium during a main

program" (claim 28, lines 10-12) and that

the client purchases merchandise or a service in the commercial message
information relating to the commercial message broadcast after the client sees
the commercial message broadcast and performs an instruction for displaying the
commercial message information relating to the commercial message broadcast

(claim 28, lines 1 2-1 6). Therefore, it is submitted that claim 28 also patentably distinguishes

over Sahota .

Claim 29 recites

receiving information about a client or information about merchandise or a service
included in commercial message information and purchased by a client, as com-
merce information when the client sees a commercial message broadcast, per-
forms an instruction for displaying the commercial message information relating
to the commercial message broadcast and purchases the merchandise or the
service while the commercial message broadcast and the commercial message
information relating to the commercial message broadcast are broadcasted
concurrently during a main program

(claim 29, lines 5-1 1 ). As discussed above, Sahota discloses the display of a link to a website,

not "information about a client or information about merchandise or a service" (claim 28, lines 5-

6). Therefore, it is submitted that claim 29 also patentably distinguishes over Sahota .

11

Serial No. 09/933,766

Rejections under 35 U.S.C. § 103(a)

On pages 7-8 of the January 19, 2007 Office Action, claims 4-5 were rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Sahota and Mayer . Nothing was cited
or has been found in Mayer suggesting modification of Sahota to overcome the deficiencies
discussed above. Therefore, it is submitted that claims 4-5 which depend from claim 1 patenta-
bly distinguish over Sahota and Mayer for the reasons discussed above with respect to the
distinctions of claim 1 over Sahota taken alone.

Summary

It is submitted that the references cited by the Examiner do not teach or suggest the
features of the present claimed invention. Thus, it is submitted that at least claims 1-9, 28 and
29 are in a condition suitable for allowance. Reconsideration of the claims and an early Notice
of Allowance are earnestly solicited.

Finally, if there are any formal matters remaining after this response, the Examiner is
requested to telephone the undersigned to attend to these matters.

If there are any additional fees associated with filing of this Amendment, please charge
the same to our Deposit Account No. 1 9-3935.

Respectfully submitted,

STAAS & HALSEY LLP

Date: June 19, 2007 By: __ /KCchard/A. GoUhcrfer/

Richard A. Gollhofer
Registration No. 31,106

1201 New York Avenue, NW, 7th Floor
Washington, D.C. 20005
Telephone: (202)434-1500
Facsimile: (202)434-1501

12